Court issuing search warrant needs no opinion of Trademark Registrar

By Manisha Singh Nair, Lex Orbis
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Arevision petition was filed by Sanyo Electric Company before the Delhi High Court against an order of the additional chief metropolitan magistrate. The order directed that a search warrant issued by the court under section 93 of the Code of Criminal Procedure should not be executed until the police have obtained the opinion of the Registrar of Trade Marks under the proviso to section 115(4) of the Trade Marks Act, 1999.

The issue

Manisha Singh Nair, Partner, Lex Orbis Intellectual Property Practice
Manisha Singh Nair
Partner
Lex Orbis Intellectual Property Practice

The issue that came to the fore in the petition was whether the proviso to that section of the Trade Marks Act, which qualifies the power of the police to conduct a search at the premises of an alleged counterfeiter or alleged infringer of a trademark by requiring them to seek a prior opinion of the Registrar of Trade Marks, should also apply to a court for a search warrant made under section 93 of the Code of Criminal Procedure.

The petitioner assailed the impugned order by contending that section 115(4) of the Trade Marks Act should not be applicable to a search warrant issued under section 93 of the Code of Criminal Procedure. This, it argued, was because the Trade Marks Act, 1999 is a special piece of legislation and section 115 of that act is a fascicle of chapter XII of that act, whose application is restricted to the provisions of the Trade Marks Act, 1999 only.

Section 115(3) provides that the offences under sections 103-105 of the Trade Marks Act, including the offences of the falsification and false application of a trademark, shall be cognizable (i.e. fall within the jurisdiction of a court), and provisions of the Code of Criminal Procedure relating to cognizable offences shall be applicable except where a special procedure, restriction or prohibition prescribed under the Trade Marks Act applies.

Section 115(4) relates to search and seizure by the police without a warrant, and the proviso to sub-clause (4) provides that a police officer shall obtain the opinion of the registrar before making any search or seizure. Section 93 of the Code of Criminal Procedure, on the other hand, deals with the power of the court to authorize search and seizure. The court can issue a search warrant when conditions mentioned in section 93 of the code are satisfied. A search authorized under section 93 of the code is not a search without a warrant, but is a search under a warrant issued by the court after due consideration. The words “reason to believe” in section 93 of the code contemplate an objective determination based on judicial deliberation by the court.

The petitioner thus contended that an order under section 93 is a judicial order, holding greater authority. Subjecting a judicial order to the registrar’s opinion would defeat the purpose and object of the said section.

The purpose of a proviso

While considering the applicability of the proviso to section 115(4) of the Trade Marks Act, the court observed that a proviso can serve four different purposes:

  1. it may qualify or except certain provisions from the main enactment;
  2. it may entirely change the fundamental intention behind the enactment by insisting that certain conditions be fulfilled in order to make the enactment workable;
  3. it may be so embedded in the act itself as to become integral part of the enactment and thus acquire the tenor and colour of the substantive enactment itself; and
  4. it may be used merely to act as an optional addendum to the enactment with the sole object of explaining the real intention of the statutory provision.

The court also considered the description and extent of a proviso as was aptly given by Lord Oreburn in the Welsh case of Rhondda Urban District Council v Taff Vale Railway Company. In this case, which dates from 1909, it was pointed out that a proviso inserted by a draftsman is not always used legitimately, and at times a section worded as a proviso may, in substance, wholly or partly be a fresh enactment adding to and not merely qualifying what goes before.

It was further observed that generally speaking, it is true that a proviso is an exception to the main part of a section, but it was also recognized that in exceptional case a proviso may be a substantive provision itself.

In the present case, the court observed that “looking at the language of proviso to section 115(4), [and its] object and purpose, the proviso does not warrant a wider application beyond the substantive section 115(4). The section is confined to searches without warrant and prevents misuse of power of search by the police officer. There is no indication in the language that the proviso is intended to apply as a proviso to section 93 of Criminal Procedure Code.”

The court further observed that “the prerequisites or pre-conditions for a search by a police officer without warrant under the proviso to section 115(4) of the Trade Marks Act cannot be read into or made a pre-condition before a search warrant issued under section 93 of the code is executed. Otherwise, a judicial order of the court issuing warrant would be a mere paper order unless the registrar gives a positive opinion. The language of the proviso does certainly not intend this as it makes a judicial order ineffectual till the registrar gives an opinion. The legislative intent behind empowering a police officer to conduct a search only pursuant to the opinion of the registrar under section 115(4) is clearly to protect the right to privacy and to ensure that the power so given to a police officer is not abused.”

Outcome awaited

While allowing the revision petition, the Delhi High Court referred the matter back to the court of the additional chief metropolitan magistrate to decide the application for a search warrant under section 93 of the Code of Criminal Procedure.

Manisha Singh Nair is a partner at Lex Orbis, an intellectual property practice law firm headquartered in New Delhi

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